July 2010 Issue

Rule Review

Rules 1.510 and 1.915 (collectively “the Rules”) set forth the requirements for a request for reexamination.  Though the Rules relate to ex parte and inter partes reexamination respectively, they include many of the same substantive requirements.  Thus, for the purposes of this article, the Rules are reviewed collectively.  Compliance with the Rules will highlight information relevant to the examiner’s decision whether to grant reexamination.

In addition to several technical requirements, such as, e.g., including the required fee, identifying every claim for which reexamination is requested, and providing copies of the cited references, the Rules require (1) a statement pointing out each substantial new question (SNQ) of patentability based on the cited references, and (2) a detailed explanation of the pertinency and manner of applying those references to every claim for which reexamination is requested. 

A statement pointing out an SNQ is a concise statement that identifies a new, noncumulative technical feature of a reference and explains why the feature is a new teaching that should have been considered.  The new technological teaching may be presented by, e.g., discussing the subject matter of the cited reference that relates to at least one claim limitation and provides a teaching that was not considered in the prior examination.  At least one reference cited in each proposed rejection must provide a new, noncumulative technological teaching.  Furthermore, the request must state an SNQ for every claim for which reexamination is requested. 

According to the USPTO, many defective requests do not distinguish the SNQ from the proposed rejections.  To avoid a defective request, the SNQ should be limited to the new teaching in the cited reference, and should be distinct from the identification and explanation of the proposed rejections.  The focus should be on the specific features of the reference, and requesters should refrain from adding extraneous material such as general recitations of the law. 

The detailed explanation of how the cited references apply to the claims is a proposed rejection based on the new technological teaching.  Each proposed rejection, e.g., anticipation, should have a separate explanation stating how the references apply to every claim limitation for each claim to which the proposed rejection is applied.  The detailed explanation may be presented by either a claim chart or a narrative.  The USPTO, however, cautions against including both because doing so may lengthen the request and introduce inconsistencies.  According to the USPTO, “[p]roposed rejections that clearly and concisely identify and provide support for a prima facie case of unpatentability are more likely to be adopted by [an] examiner.”  Best Practices and FAQs for filing requests for reexamination compliant with 37 CFR 1.510 and 1.915, at 17 (2010), http://www.uspto.gov/patents/Best_Practices_and_FAQs
_for_filing_reexaminations_5_10_10.pdf.  However, “[e]xplanations that are incomplete, unclear, or confusing may result in [an] examiner not adopting the proposed rejection or not understanding the requester’s position on how the references are applied to the claim limitations.”  Id. 

The USPTO finds many requests defective because they either “(1) do not explain how some of the references apply to the claim limitations or (2) group references or statutory bases of rejections in a way that does not clearly identify what rejections are proposed by the third party requesters, or what applications of the art are proposed by patent owner requesters.”  Id. at 15.  The USPTO suggests citing to only those references identified as a basis for a proposed rejection (or applied to the claims in the case of a patent owner’s request for reexamination).  Further, obviousness and anticipation rejections should be proposed separately and not lumped together using “and/or” terminology.  On the other hand, requesters may apply one ground of rejection to multiple claims grouped together. 

Additional guidance for preparing requests for reexaminations that comply with the Rules may be found in the Best Practices and FAQs for filing requests for reexamination compliant with 37 CFR 1.510 and 1.915 (2010), http://www.uspto.gov/patents/Best_Practices_and_FAQs_for_filing_
reexaminations_5_10_10.pdf.